OPPOSITION No B 2 580 374

Marnobre, Lda, Rua António Santos Troia, nº4, Cabedelo, São Pedro, 3090-740, Figueira da Foz, Portugal (opponent), represented by Fernando Godinho, Avenida Fernão de Magalhães, nº153, 5º andar, Sala 13, 3000-176 Coimbra, Portugal (professional representative)

a g a i n s t

Soguima - Comércio y Indústria Alimentar, S.A., Zona Industrial 2, Vila Nova de Sande, 4806-909 Caldas Das Taipas, Portugal (applicant), represented by AB Patentiena - Gabinete Técnico de Patentes E Registos, LDA., Rua da Madalena, 214, 4º, 1100-325 Lisboa, Portugal (professional representative).

On 29/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 580 374 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 813 209 namely against all the goods in Class 29. The opposition is based on Portuguese trade mark registration No 524 852. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 29: Food based upon fish; fish fillets; fish in brine; preserved fish; canned fish; fish not live [fishing]; sardines; salmon; mussels not live; crayfish not live ; cameroon, not live.

The contested goods are the following:

Class 29: Salt cod; Dried cod; Frozen cod; Deep-frozen cod; Fish; Frozen fish.

The contested salt cod; dried cod; frozen cod; deep-frozen cod; frozen fish are included in the broad category of the opponent’s preserved fish. Therefore, they are identical.

The contested fish includes, as a broader category, the opponent’s salmon. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are figurative.

The earlier sign is composed of the verbal element ‘MARNOBRE’ written in standard letters where ‘MAR’ is in green and ‘NOBRE’ in grey. There are some figurative elements in the form of curved lines and a small, barely visible circle. These figurative elements are not particularly elaborate.

The contested sign has been applied for as a colour mark, with the colours green, white and blue claimed. It is composed of the verbal element ‘MARNOR’ in white standard letters where the letters ‘MAR’ are in bold. They are set against a label with a circular element at the top.

The element ‘MAR’, present in both signs, means ‘sea’ in Portuguese. It will be identified by the relevant public because of the difference in colour in the earlier mark and since it is in bold in the contested sign, and also because it has a clear meaning.

For the same reasons, the element ‘NOBRE’ will be identified in the earlier mark. It means, inter alia, ‘noble’, ‘honourable’ or ‘high-quality’ in Portuguese. In relation to the relevant goods (fish) it will be understood as ‘boneless’.

Bearing in mind that the relevant goods are fish, the words ‘MAR’ and ‘NOBRE’ of the earlier mark are weak and non-distinctive, respectively, for these goods.

A part of the relevant public may associate ‘NOR’ of the contested sign with ‘North’ as it is close to the Portuguese equivalent ‘norte’. Consequently the whole contested sign may be perceived by this part of the public as referring to ‘the North Sea’.

Bearing in mind that the relevant goods are fish, the word ‘MAR’ is weak in relation to the relevant goods. For the part of the public associating ‘NOR’ with ‘North’ this word is also weak for the relevant goods.

Visually, the signs coincide in the word ‘MAR’ and the letters ‘NO*R*’. However, account shall be taken of the meaning of these elements and the fact that the coincidences concern the weak and non-distinctive elements of the earlier mark. The signs differ in the letters ‘B’ and ‘E’ of the word ‘NOBRE’ of the earlier mark and colours and figurative elements of the signs. Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛MAR’ and of the letters ‘NO*R*’, present in both signs. However, account must be taken of the meaning of the words composed of these elements and the fact that the coincidences concern the weak and non-distinctive elements of the earlier mark. The signs differ in the sound of the letters ‘B’ and ‘E’ of the word ‘NOBRE’ of the earlier mark. Due to the differences in lengths of the verbal elements of the signs, the rhythm and intonation differ. Therefore, the signs are aurally similar to a low degree.

Conceptually, both signs refer to the ‘sea’ (‘MAR’). However, this element is weak and will not have much of an impact from a conceptual point of view. Furthermore, the signs differ in the meaning of the element ‘NOBRE’ of the earlier mark, although this element will not be perceived as a badge of origin, and in the element ‘NOR’ of the contested sign for those who perceive the meaning in this element. Therefore, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation in connection with the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• A copy of the certificate of Portuguese trade mark registration No 524 852,

• A copy of the certificate of Portuguese logo No 22 880 which is identical to earlier Portuguese mark No 524 852

• Copies of pictures of the products in the supermarket. The earlier mark is displayed on them.

• A copy of the certificate of registration of the figurative mark ‘MARNOBRE’ in Canada.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired an enhanced degree of distinctiveness as a result of reputation. Certificates of registrations do not show the use of the signs. The pictures of the products bearing the earlier mark and presented in the supermarket do not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. A mere reference to the website www.marnobre.pt without complementary information as to the actual use of the Internet site by potential and relevant consumers or complementary advertising and sales figures is clearly insufficient. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.

5. Global assessment, other arguments and conclusion

Overall, weighing up all the relevant factors, the Opposition Division considers that the similarities between the signs are not sufficient to cause confusion on the part of the public in respect of the identical goods.

The additional elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing also in mind that the common word ‘MAR’ is of limited distinctiveness in relation to fish products and goods with a direct connection to the sea and the remaining similarities concern the element ‘NOBRE’ of the earlier mark which is non-distinctive for the relevant public.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

In its observations the opponent makes reference to the mark’s reputation, ‘unfair commercial rivalry’ and ‘advantage’ without, however, directly quoting Article 8(5) EUTMR. In any event, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition could not be successful on this ground.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rhys MORGAN

Justyna GBYL

Arkadiusz GÓRNY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.